Getty Images (US), Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin
Claim Number: FA1208001460731
Complainant is Getty Images (US), Inc. (“Complainant”), represented by CitizenHawk, Inc., California, USA. Respondent is Private Registrations Aktien Gesellschaft / Domain Admin (“Respondent”), Saint Vincent and the Grenadines.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <gettyimges.com>, <iistockphoto.com>, <isotckphoto.com>, <istcokphoto.com>, <istockfhoto.com>, <istokphoto.com>, and <itockphoto.com>, registered with PDR Ltd. d/b/a Publicdomainregistry.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 30, 2012; the National Arbitration Forum received payment on August 30, 2012.
On August 31, 2012, PDR Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <gettyimges.com>, <iistockphoto.com>, <isotckphoto.com>, <istcokphoto.com>, <istockfhoto.com>, <istokphoto.com>, and <itockphoto.com> domain names are registered with PDR Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the names. PDR Ltd. d/b/a Publicdomainregistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a Publicdomainregistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@gettyimges.com, postmaster@iistockphoto.com, postmaster@isotckphoto.com, postmaster@istcokphoto.com, postmaster@istockfhoto.com, postmaster@istokphoto.com, and postmaster@itockphoto.com. Also on September 25, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 19, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <gettyimges.com>, <iistockphoto.com>, <isotckphoto.com>, <istcokphoto.com>, <istockfhoto.com>, <istokphoto.com>, and <itockphoto.com> domain names are confusingly similar to Complainant’s GETTY IMAGES and ISTOCKPHOTO marks.
2. Respondent does not have any rights or legitimate interests in the <gettyimges.com>, <iistockphoto.com>, <isotckphoto.com>, <istcokphoto.com>, <istockfhoto.com>, <istokphoto.com>, and <itockphoto.com> domain names.
3. Respondent registered and used the <gettyimges.com>, <iistockphoto.com>, <isotckphoto.com>, <istcokphoto.com>, <istockfhoto.com>, <istokphoto.com>, and <itockphoto.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant owns United States Patent and Trademark Office (“USPTO”) registrations for its GETTY IMAGES mark (e.g., Reg. No. 2,656,652 registered December 3, 2002), and for its ISTOCKPHOTO mark (Reg. No. 3,440,599 filed April 18, 2005; registered June 3, 2008).
Respondent registered the disputed domain names as follows:
<gettyimges.com> on April 22, 2004;
<iistockphoto.com> on October 1, 2007;
<isotckphoto.com> on June 20, 2006;
<istcokphoto.com> on June 20, 2006;
<istockfhoto.com> on March 16, 2006;
<istokphoto.com> on June 8, 2005; and
<itockphoto.com> on June 25, 2007.
The disputed domain names resolve to websites where Respondent displays links to Complainant and Complainant’s competitors.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The Panel finds that Complainant has rights in its GETTY IMAGES and ISTOCKPHOTO marks through its trademark registrations. Panels have found that the registration of a mark through the USPTO establishes rights in the mark, dating back to the filing date of the registration. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
Respondent’s <gettyimges.com> domain name is confusingly similar to the GETTY IMAGES mark, since the deletion of one letter and a space, and the addition of the gTLD “.com,” fail to differentiate the <gettyimges.com> domain name from the GETTY IMAGES mark. The panel in Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006), held that the deletion of a single letter does not decrease confusion. In Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007), the panel found that the deletion of a space and addition of a generic top-level domain (“gTLD”) are irrelevant to a determination of confusing similarity. Therefore, the Panel finds that the <gettyimges.com> domain name is confusingly similar to the GETTY IMAGES mark.
Respondent’s <iistockphoto.com>, <isotckphoto.com>, <istcokphoto.com>, <istockfhoto.com>, <istokphoto.com>, and <itockphoto.com> domain names are likewise confusingly similar to the ISTOCKPHOTO mark. Respondent simply adds, deletes, replaces or transposes a letter, and adds the gTLD “.com,” in each of the domain names, failing to distinguish the domain names from Complianant’s ISTOCKPHOTO mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Therefore, the Panel finds that the <iistockphoto.com>, <isotckphoto.com>, <istcokphoto.com>, <istockfhoto.com>, <istokphoto.com>, and <itockphoto.com> domain names are confusingly similar to the ISTOCKPHOTO mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. Complainant argues that Respondent is not commonly known by the disputed domain names given the following: (i) the WHOIS information for each domain name suggests that Respondent is known as an entity other than those reflecting the domain names, (ii) Respondent is not sponsored by or legitimately affiliated with Complainant, and (iii) Complainant has not given Respondent permission to use the GETTY IMAGES and ISTOCKPHOTO marks. The WHOIS record for the disputed domain names lists “Private Registrations Aktien Gesellschaft / Domain Admin” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <gettyimges.com>, <iistockphoto.com>, <isotckphoto.com>, <istcokphoto.com>, <istockfhoto.com>, <istokphoto.com>, and <itockphoto.com> domain names pursuant to Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant asserts that Respondent’s use of the <gettyimges.com>, <iistockphoto.com>, <isotckphoto.com>, <istcokphoto.com>, <istockfhoto.com>, <istokphoto.com>, and <itockphoto.com> domain names is further evidence of a lack or rights and legitimate interests. Complainant contends that the disputed domain names resolve to websites where Respondent displays links to Complainant and its competitors. The Panel notes such headings as “Stock Images,” “Photo Sharing Gallery,” “IStock Photo,” and “Getty Images” on the websites resolving from the disputed domain names. Panels have previously held that the use of a disputed domain name to display links to the complainant and its competitors is not a use protected under Policy ¶¶ 4(c)(i) and 4(c)(iii). See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the use of the disputed domain name to operate a website displaying links to competing goods and services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel finds that Respondent’s use of the <gettyimges.com>, <iistockphoto.com>, <isotckphoto.com>, <istcokphoto.com>, <istockfhoto.com>, <istokphoto.com>, and <itockphoto.com> domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant has submitted evidence that Respondent, Private Registrations Aktien Gesellschaft / Domain Admin, has been the respondent in multiple previous UDRP proceedings that resulted in the disputed domain names in those cases being transferred to the respective complainants. See State Farm Mut. Auto. Ins. Co. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1308139 (Nat. Arb. Forum Apr. 12, 2010); see also Hard Rock Café Int’l. (USA), Inc. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1310224 (Nat. Arb. Forum Apr. 14, 2010); see also Hewlett-Packard Dev. Co., L.P. v. Private Registrations Aktien Gesellschaft / Domain Admin, FA 1299093 (Nat. Arb. Forum Feb. 1, 2010). The Panel finds that multiple adverse UDRP proceedings constitute evidence of Respondent’s serial cybersquatting, evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants).
Respondent registered and is using the <gettyimges.com>, <iistockphoto.com>, <isotckphoto.com>, <istcokphoto.com>, <istockfhoto.com>, <istokphoto.com>, and <itockphoto.com> domain names to resolve to websites displaying links to Complainant and Complainant’s competitors, diverting consumers and disrupting Complainant’s business. The panel in Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006), found that the display of competing links on a website, some to a complainant’s website, is disruptive to the complainant’s business. The Panel similarly finds that this is evidence of Respondent’s bad faith under Policy ¶ 4(b)(iii).
Respondent’s registration and use of the <gettyimges.com>, <iistockphoto.com>, <isotckphoto.com>, <istcokphoto.com>, <istockfhoto.com>, <istokphoto.com>, and <itockphoto.com> domain names were no doubt aimed at taking advantage of the goodwill established in Complainant’s marks. Respondent displays links to Complainant and its competitors via the disputed domain names under headings such as “Getty Photos,” “Royalty-Free Images,” “Istock Photography,” to its commercial advantage. Therefore, the Panel finds that Respondent’s <gettyimges.com>, <iistockphoto.com>, <isotckphoto.com>, <istcokphoto.com>, <istockfhoto.com>, <istokphoto.com>, and <itockphoto.com> domain names were registered and are used in a bad faith attempt to take commercial advantage of Internet users by creating a presumption that Complainant is affiliated with the disputed domain names pursuant to Policy ¶4(b)(iv). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Respondent’s bad faith is further demonstrated by Respondent’s serial typosquatting of Complainant’s marks. See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (“Respondent's registration of the domain names in dispute constitutes bad faith because the domain names are merely typosquatted versions of the [complainant’s] IMDB mark.). Therefore, the Panel finds that Respondent’s typosquatting is evidence of its bad faith in registering and using the <gettyimges.com>, <iistockphoto.com>, <isotckphoto.com>, <istcokphoto.com>, <istockfhoto.com>, <istokphoto.com>, and <itockphoto.com> domain names pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <gettyimges.com>, <iistockphoto.com>, <isotckphoto.com>, <istcokphoto.com>, <istockfhoto.com>, <istokphoto.com>, and <itockphoto.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: October 26, 2012
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